By Donald Zuhn --
Last fall, the U.S. Patent and Trademark Office announced that it would be releasing a number of a Federal Register notices in January as part of the Office's efforts to implement the Leahy-Smith America Invents Act (see "USPTO News Briefs"). On Friday, the Office issued a press release noting that four notices of proposed rulemaking regarding implementation of various provisions of the AIA had been published in the Federal Register on January 5. These four notices concern:
• Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act (77 Fed. Reg. 442);
• Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act (77 Fed. Reg. 448);
• Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings (77 Fed. Reg. 457); and
• Changes To Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act (77 Fed. Reg. 982).
The Office noted that the publication of the proposed rules commenced a 60-day period for public comment. The Office also noted that proposed rules on supplemental examination, inter partes review, post-grant review, the transitional program for covered business methods, and derivation would be published later this month.
Patent Docs will discuss each of the four notices published last week, beginning with the notice to implement miscellaneous post patent provisions of the AIA. Subsequent posts will address the other notices.
In the notice entitled "Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act," the Office notes that AIA provisions result in the following changes to Title 35:
• AIA § 6(g) amends 35 U.S.C. § 301 to expand the information that can be submitted in the file of an issued patent to include written statements made by a patent owner before a Federal court or the Office regarding the scope of any claim of the patent;
• AIA § 6(a) and (d) contain provisions in new 35 U.S.C. §§ 315(e)(1) and 325(e)(1) that estop a third party requester from filing a request for ex parte reexamination where the third party requester filed a petition for inter partes review or post grant review and a final written decision under 35 U.S.C. §§ 318(a) or 328(a) has been issued;
• AIA § 6(h)(1) amends 35 U.S.C. § 303 to expressly identify the authority of the Director to initiate reexamination based on patents and publications cited in a prior reexamination request under 35 U.S.C. § 302;
• AIA § 3(i) replaces interference proceedings with derivation proceedings;
• AIA § 3(j) replaces the "Board of Patent Appeals and Interferences" with the "Patent Trial and Appeal Board" in 35 U.S.C. §§ 134, 145, 146, 154, and 305;
• AIA § 6(a) replaces inter partes reexamination with inter partes review of a patent;
• AIA § 6(d) provides for post-grant review of patents; and
• AIA § 7 amends 35 U.S.C. § 6(b) to define the duties of the Patent Trial and Appeal Board.
To implement these changes, the Office proposes a number of rules changes, including the following:
• Rule 1.501 -- rewritten to allow for the submission of "statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent";
• Rule 1.501(f) -- limits the use of statements of the patent owner and accompanying information for determining the proper meaning of a patent claim in an ex parte reexamination proceeding that has been ordered pursuant to 35 U.S.C. § 304, an inter partes review proceeding that has been instituted pursuant to 35 U.S.C. § 314, or a post grant review proceeding that has been instituted pursuant to 35 U.S.C. § 324;
• Rule 1.510(b)(6) -- requires a certification that the estoppel provisions of inter partes review and post grant review do not bar the third party from requesting ex parte reexamination, as well as a statement identifying the real parties in interest to allow for a determine as to whether an inter partes review or post grant review filed subsequent to an ex parte reexamination bars the third party from maintaining a pending ex parte reexamination (the requester can remain anonymous by providing the identification and requesting that the Office seal it);
• A number of rules would be rewritten to replace "Board of Patent Appeals and Interferences" with "Patent Trial and Appeal Board," add specific references to trial proceedings before the Patent Trial and Appeal Board, and add specific references to derivation proceedings.
Additional discussion of the rules changes, as well as revised versions of the affected rules, can be found in the Office's Federal Register notice (77 Fed. Reg. 442).
Comments regarding this notice can be submitted by e-mail to [email protected]; by regular mail addressed to: Mail Stop Comments -- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313–1450, marked to the attention of Kenneth M. Schor, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy; or via the Federal eRulemaking Portal. The deadline for submitting comments is March 5, 2012. Additional information regarding the submission of comments can be found in the Office's Federal Register notice (77 Fed. Reg. 442).